Trademark Use in Refurbished-Goods Marketplaces: What Remains After the Original Mark Is Removed ?

Introduction : Refurbished goods lie between the ordinary resale of genuine goods and counterfeiting. An authentic item might go back into commerce after laboratory testing, reconditioning, software updating, remanufacture, rebranding, and a new warranty. Trademark law safeguards source-identifying signs, but generally does not give owners indefinite monopoly over all subsequent sales.

This arose in the context of the end of life hard drives manufactured by Western Digital and Seagate. On 09 March 2026 a Division Bench of the Delhi High Court while hearing appeals from interlocutory injunction proceedings held, prima facie, that because the refurbishers had removed the original marks before sale, the refurbishers had not "used" the registered marks under section - 29 of the Trade Marks Act, 1999. The High Court also held that international exhaustion applied in the connected appeal, in respect of genuine imported drives which still bore the original marks. The Supreme Court later summarily dismissed Western Digital's special leave petition.

The Supreme Court did not set aside the High Court judgment and the Supreme Court did not specifically address the sections of the Trade Marks Act, 1999 that were in issue. The other questions relate to 'use' in trademarks, material change, exhaustion and disclosures to prevent a lawful second life from becoming misleading.

Legal Provisions: The Statutory Route from Use to Exhaustion

Section 29 infringement commences with a “use” of a trade mark

Section 29 contains nine subsections defining "unauthorised 'use' of an identical or similar trade mark 'in the course of trade'" the scope of which is defined in sec - 29(6) which specifies various acts as including use, among other acts, "affixing the mark to the goods or to any package or receptacle containing the goods" or putting or keeping goods in stock under a trade mark or importing/exporting them under a trade mark. The statutory enquiry is thus not whether the defendant has carried on the transaction with a mark on the products, but whether the defendant used the registered mark or a deceptively similar mark in the impugned transaction.

Sections 30(3) and 30(4): exhaustion and legitimate reasons to object

The provisions under Sections 30(3) and 30(4) guard against any subsequent transactions of marked goods lawfully acquired in situations where it is put on the market by the proprietor or with the proprietor’s consent (under sub clauses (a) and (b)). In the context of international application, Kapil Wadhwa interprets ‘the market’ as the international market. Section 30(4) removes that protection where ‘legitimate reasons’ exist to oppose further dealings particularly where goods are changed or impaired. The 2026 Division Bench highlighted the fact that there can be no infringement on the basis of 30(3) or 30(4) unless an action first satisfies Section 29. It also read “changed” together with “impaired”, so a non-prejudicial alteration does not automatically trigger Section 30(4).

False marks and counterfeit goods

Counterfeit goods are distinct. Sections 101-104 cover false application and falsification of marks along with corresponding penalties. Exhaustion presupposes genuine goods introduced by the proprietor or with their consent. Goods falsely bearing the proprietor’s mark without an authorised first sale cannot rely on Section 30(3). Removing a genuine mark from an authentic used article is conceptually different from counterfeiting; however, effacement may still amount to falsification under Section 102(1)(b).

Consumer-protection and e-commerce disclosure duties

The Consumer Protection (E-Commerce) Rules, 2020 strengthen the disclosure part of the analysis. Marketplace entities should demand accurate description of product and its images along with visibility of the seller details, warranty and guarantee and refund, and return policy. Sellers should provide information enabling informed pre-purchase decisions, in case of import, should include importer and authenticity information and also warranty details. In relation to refurbished goods, these duties provide workable consumer protection measures against partial truths.

Legal Analysis: Three Resale Models and the limited Intervention of Supreme Court’s 

What Supreme Court order decides, what it does not

The SLP was dismissed with the statement that the Court was “not inclined to interfere”. This left the Delhi High Court’s order operative, but did not amount to a speaking affirmation of its reasoning. Under Kunhayammed v State of Kerala, a non-speaking SLP dismissal results in neither merger nor a declaration of law under Article 141. The Division Bench judgment therefore supplies the substantive trademark analysis, which remains prima facie because it arose from interlocutory proceedings under Order XXXIX.

Model one: Genuine Goods Resold After Removal of the Original Mark

The Division Bench's reasoning in relation to Model One- genuine goods resold after removal of the original mark- was very straightforward. The respondents obtained second-hand drives, tested, reformatted and refurbished them, and then removed the Western Digital or Seagate marks. They then affixed their own marks and serial or model numbers and sold the drives. Because the respondents were not alleged to have used the registered marks or any deceptively similar marks, the resale did not prima facie constitute trademark ‘use’ under Section 29.

On reverse passing off, the Court held, prima facie, that the claim is not actionable, at least under Indian trademark law and that, even if it were, its elements were absent. It left open whether another statute or legal remedy could address a false representation that refurbished goods were new or that the refurbisher was their original manufacturer.

Model two: genuine goods resold under their original label

Where the original mark remains, import or sale ordinarily constitutes “use” under Section 29(6). The reseller must therefore rely on Section 30(3), showing lawful acquisition and authorised first marketing. In the Hansraj Dugar appeal, the Division Bench treated the foreign purchase as prima facie lawful and found no evidence of impairment or other legitimate reason under Section 30(4). The defence would fail if lawful acquisition were not established or Section 30(4) applied.

Model three: counterfeits and misused marks

Counterfeit goods do not benefit from exhaustion because they were not first marketed as genuine goods by the proprietor or with consent. Their central deception concerns authenticity and trade origin. Genuine refurbished goods present a different risk: the underlying article may be authentic, while consumers may still be misled about its condition, age, refurbisher, warranty or affiliation. Marketplace complaint systems should therefore distinguish counterfeiting from lawful resale accompanied by inadequate disclosure.

Disclosure remains essential after debranding

Removing the mark may answer the narrow Section 29 inquiry, but not what the consumer was told. In Seagate Technology LLC v Daichi International, the Single Judge required packaging and listings to identify the original manufacturer by word mark, state prominently that the product was “used and refurbished”, state that no manufacturer’s warranty or service applied, identify the refurbisher and its warranty, and describe the product’s features accurately. The Division Bench did not endorse these directions as a substantive consequence of infringement. It questioned whether they could issue after a finding of no prima facie infringement and called the issue a grey area. It nevertheless left them undisturbed because the refurbishers had not appealed and the appellants could not be placed in a worse position for appealing.

Case Laws: The Emerging Judicial Line

Western Digital Technologies Inc v Geonix International Pvt Ltd (Delhi High Court, 2026)

At the interlocutory stage, the Division Bench treated Section 29 as the threshold inquiry. Because the respondents removed the proprietors’ marks before sale and used no identical or deceptively similar mark, it found no prima facie infringement. It also held that reverse passing off was not actionable under Indian trademark law, found Section 30(3) satisfied in the alternative, and held Section 30(4) inapplicable. The disclosure directions were retained only because the respondents had not appealed them.

Western Digital Technologies Inc v Hansraj Dugar (Supreme Court, 2026)

The Supreme Court dismissed the SLP without a reasoned examination of the trademark issues. The Delhi High Court judgment therefore remains undisturbed, but its reasoning did not thereby become a Supreme Court ratio under Article 141.

Seagate Technology LLC v Daichi International (Delhi High Court, 2024)

The Single Judge permitted the sale of refurbished HDDs subject to prominent disclosures concerning the original manufacturer, the product’s used-and-refurbished status, the absence of the manufacturer’s warranty, the refurbisher’s own warranty, and accurate product features. The Division Bench later left those directions undisturbed for procedural reasons, without endorsing their doctrinal basis.

Kapil Wadhwa v Samsung Electronics Co Ltd (Delhi High Court, 2012)

The Division Bench recognised international exhaustion under Section 30(3) and required prominent disclosure that the parallel-imported products carried no Samsung warranty or after-sales service and that any such support came from the importer. It provides the doctrinal link between parallel imports and refurbished-goods disclosure.

Champion Spark Plug Co v Sanders (United States Supreme Court, 1947)

Champion Spark Plug supports the principle that reconditioned genuine goods can carry the original mark as long as it is evident that the products have been refurbished, and by whom, to prevent the manufacturer from being blamed for wear and tear occurring due to use or reconditioning. Indian law does not copy the rule mechanically, but its disclosure logic is closely aligned with Daichi.

Practical Implications: Marketplace Compliance by Design

1. Verify provenance before listing

The seller should be required to provide purchase invoices, import documentation (as appropriate), serial number documentation and a refurbishment trail where applicable to establish the authenticity of the underlying article. The provenance check should be carried out prior to the grant of a renewed or refurbished designation. An item which cannot be traced to a legal purchase should not receive the benefit of a resale or exhaustion test.

2. Separate the manufacturer, refurbisher and warranty provider

The original manufacturer was responsible for the initial product; the refurbisher carried out the refurbishment; and the warranty provider assumed the responsibility for after-sales service. The original brand should not be given such primacy as to imply to the buyer that the work undertaken by the refurbisher or the warranty provider was sponsored by the brand.

3. Make the disclosure stack mandatory

At the very least, the product page and packaging should state before purchase that it is used and refurbished; who refurbished it; if the original mark is still present or has been removed; identify the original manufacturer where necessary; state the original warranty is not transferred; and identify the current warranty provider and warranty period; and disclose material facts concerning capacity, compatibility, testing, replacement parts, and grading. This should be before the point of purchase (not hidden in an FAQ or a pdf given to the customer after purchase).

4. Align the physical product with images, metadata and advertising

A compliant text description can be undermined by photographs of new retail packaging, an "official" logo treatment, an incorrect condition filter, or the search metadata, which states the product is new. Marketplaces should mandate photographs of the real refurbished packaging and implement structured fields that disallow sellers from choosing "new" and manually entering "refurbished" in tiny print.

5. Classify trademark complaints by legal types

Counterfeit or false-mark complaint. Sale of genuine marked product: exhaustion/potential damage. Sale of genuine article under reconditioned own mark: use/false description/disclosure questions. Separate review channels reduce over-removal of lawfully resold merchandise listings & under-enforcement against counterfeit listings.

6. Maintain an audit trail and Address repeat seller non-compliance

The marketplace shall maintain records of all seller undertakings, proof of origin, changes to listings, complaint outcomes, repeat-removal history etc. These records serve as proof for the integrity requirements under the E-Commerce Rules and allow the platform to identify sellers with many offers of infringing, counterfeit or substantially misdescribed goods.

Conclusion

The refurbished-HDD issue brings into sharp focus the kinds of circumstances in which a trademark owner can make infringement claims in the downstream market. When the mark is stripped out prior to sale and a third-party uses a dissimilar mark, Section 29 may not be engaged where the registered mark is not used. Where real goods do contain the mark, the third-party might take advantage of international exhaustion of right to resale, once lawfully bought and properly put in the market, if the owner cannot articulate any reasons to restrict further dealings under Section 30(4). Counterfeit goods on the other hand will be excluded, since the product was fraudulent at the point of origin from day one.

While the Supreme Court’s refusal to interfere leaves the Delhi High Court's decision operative in practice, the fact that this decision is entirely unreasonable must not be mistaken for a declaration of law under Art.141. More realistically, one should learn the spirit: in conjunction with exhaustion, transparency matters in the marketplace. A marketplace which can trace the source, accurately labels refurbishment, distinguishes the original manufacture from the refurbisher, determines warranty obligations, provides consumers with material information; is better placed to support a genuine circular economy than serve as the breeding ground for materially misdescribed or counterfeit goods.

Author: Ayush Garg in case of any queries please contact/write back to us via email to content@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

Endnotes

1. Western Digital Technologies Inc v Geonix International Pvt Ltd, 2026 SCC OnLine Del 901, paras 1-10, 113-15, 147-49, 166-68; Western Digital Technologies Inc v Hansraj Dugar, SLP (C) No 17783/2026, order dated 26 May 2026 (Supreme Court of India).

2. Trade Marks Act 1999, s 29(1)-(2), 29(6) (India).

3. Trade Marks Act 1999, s 30(3)-(4); Kapil Wadhwa v Samsung Electronics Co Ltd, 2012 SCC OnLine Del 5172.

4. Trade Marks Act 1999, s 101-104 (India) especially s 102(1)(b).

5. Consumer Protection (E-Commerce) Rules 2020, rr 5(2)-(3), 6(4)-(5) (India).

6. Kunhayammed v State of Kerala, (2000) 6 SCC 359; Western Digital Technologies Inc v Hansraj Dugar, SLP (C) No 17783/2026, order dated 26 May 2026 (Supreme Court of India).

7. Western Digital Technologies Inc v Geonix International Pvt Ltd, 2026 SCC OnLine Del 901, paras 25-29, 113-15.

8. ibid paras 83-104; Trade Marks Act 1999, s 27(2).

9. Western Digital Technologies Inc v Hansraj Dugar, 2025:DHC:3844, paras 32-37; Western Digital Technologies Inc v Geonix International Pvt Ltd, 2026 SCC OnLine Del 901, paras 150-66.

10. Seagate Technology LLC v Daichi International, 2024:DHC:4193, para 116.

11. Kapil Wadhwa v Samsung Electronics Co Ltd, 2012 SCC OnLine Del 5172, paras 68-75.

12. Champion Spark Plug Co v Sanders, 331 US 125 (1947).